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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL LTD.,
`
`Plaintiff,
`
`v.
`
`APPLE INC,
`
`Defendant.
`
`§
` §
` §
` §
` §
` §
` §
` §
`§
`
`
`CIVIL ACTION NO. 5:19-CV-00036-RWS
`
`ORDER
`
`Before the Court is Defendant Apple, Inc.’s Motion to Transfer Venue to the Northern
`
`District of California under 28 U.S.C. § 1404 (Docket No. 57). Apple contends that venue is
`
`clearly more convenient in the Northern District of California. For the reasons set forth below,
`
`Apple’s Motion is DENIED.
`
`I.
`
`Background
`
`Plaintiff Maxell Ltd. sued Apple, Inc. alleging infringement of 10 Maxell patents.1 Maxell
`
`alleges that various aspects of Apple’s iPhone, iPad and Mac products infringe the Asserted
`
`Patents, including: cameras; navigation capabilities; authentication systems; telecommunications
`
`techniques; video streaming; “do not disturb” functionality; power management technologies; and
`
`smartwatch integration.
`
`A.
`
`The Parties
`
`Apple is a Delaware corporation headquartered in Cupertino, California, within the
`
`Northern District of California (“NDCA”). Docket No. 57-1 ¶ 6. According to Apple’s declarant,
`
`Michael Jaynes, most of Apple’s management, marketing, research and development employees
`
`1 U.S. Patent Nos. 6,748,317; 6,580,999; 8,339,493; 7,116,438; 6,408,193; 10,084,991; 6,928,306; 6,329,794;
`10,212,586 and 6,430,498 (collectively, the “Asserted Patents”).
`
`

`

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`as well as its 12 relevant witnesses are all in NDCA. Id. at ¶¶ 7, 15, 22–35. Furthermore, Apple
`
`asserts that its engineering, sales and marketing documents are either located in NDCA or
`
`electronically accessible from there, and none are located in the Eastern District of Texas
`
`(“EDTX”). Id. at ¶¶ 33–36. According to Mr. Jaynes, Apple has no regular place of business or
`
`employees relevant to this case in EDTX. Id. at ¶¶ 19–20, 36.
`
`Apple has several operations elsewhere in Texas, including thousands of employees at its
`
`facilities in Austin. Docket No. 65-3; Docket No. 65-4. Apple holds out its Austin facilities as
`
`playing “a very critical and integral role—they are designing chips that go into all the devices
`
`[Apple] sell[s].” Docket No. 65-3 at 3.2 It is a base of Apple’s microchip design. Id. Apple’s
`
`Austin engineers played a major role in developing Apple’s ‘A’ series processors and other
`
`components in the iPhone and iPad. Id. Apple also manufactures its Mac Pro computers in Austin.
`
`Id. Apple’s Texas facilities house Apple’s customer support services for its iOS and Mac devices.
`
`Docket No. 65-5 at 2. And Apple at least partially supports its Maps software from Austin. Id.
`
`Maxell is a Japanese corporation headquartered in Kyoto, Japan. As for Maxell’s
`
`connections with this district, Hitachi Maxell, Ltd.,3 the prior owner of the Asserted Patents,
`
`worked with Alan Loudermilk in this district beginning in 2014. Docket No. 65-51 ¶¶ 5, 8. Mr.
`
`Loudermilk began working as Maxell’s agent and representative for licensing negotiations with
`
`Apple concerning some of the Asserted Patents. Id. ¶ 4. Mr. Loudermilk’s documents from the
`
`negotiations are located in this district. Id. ¶ 6–7.
`
`2 Cites to docket entries are to the ECF pagination.
`3 The relationship between Maxell, Hitachi Maxell and Hitachi is discussed infra in Section I.B.
`Page 2 of 23
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`Apple moves the Court to transfer this case to NDCA for convenience under 28 U.S.C.
`
`§ 1404. However, before analyzing the traditional § 1404(a) factors, the Court must resolve the
`
`parties’ dispute regarding the forum selection clause contained in a 2011 NDA.
`
`B.
`
`Prior Negotiations and Communications Concerning the Asserted Patents
`
`The parties have a history of negotiations dating back to the early 2010s. Interwoven into
`
`this legacy is the corporate history of Maxell and third-party Hitachi, Ltd (“Hitachi”). Prior to
`
`October 2017, Maxell was known as Hitachi Maxell, Ltd. Following a reorganization, Hitachi
`
`Maxell, Ltd. became Maxell Holdings, Ltd. by way of a name change and transferred certain assets
`
`to Maxell, Ltd., including the Asserted Patents. In this litigation, Maxell has treated Maxell, Ltd.
`
`as the direct successor to Hitachi Maxell, Ltd. 4
`
`Between at least 2011 and June 2013, Hitachi owned some of the Asserted Patents,
`
`including the ’317, ’999, ’498 and ’493 patents. Hitachi is a separate entity from the Maxell
`
`entities, but it has held varying ownership interests in Hitachi Maxell, Ltd. After June 2013,
`
`Hitachi transferred the Asserted Patents to Hitachi Maxell, Ltd.
`
`4 For the purposes of discovery Maxell has treated both Maxell, Ltd. and the extinct Hitachi Maxell, Ltd. as a single
`entity and responded to discovery on behalf of both entities.
`Page 3 of 23
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`In June 2013, Apple and Hitachi began separate discussions over Hitachi’s “Consumer’s
`
`Smart Phone Related Patents.” See Docket No. 57-22.
`
`
`
`II.
`
`Applicability of the
`
`Apple now contends that the forum selection clause in the
`
`mandates transfer to NDCA.
`
`A.
`
`Legal Standard
`
`Section 1404(a) provides that “[f]or the convenience of parties and witnesses, in the interest
`
`of justice, a district court may transfer any civil action to any other district or division where it
`
`Page 4 of 23
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`

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`might have been brought.” 28 U.S.C. § 1404(a). A case may also be transferred under § 1404(a)
`
`if there is an applicable forum selection clause. Atl. Marine Constr. Co., Inc. v. U.S. Dist. Court
`
`for the W. Dist. of Tex., 571 U.S. 49, 63 (2013). If a party files such a motion, then “proper
`
`application of § 1404(a) requires that a forum-selection clause be ‘given controlling weight in all
`
`but the most exceptional cases.’ ” Id. at 59–60.
`
`To determine whether transfer pursuant to a forum-selection clause is appropriate, courts
`
`follow a two-step analysis. Before addressing transfer under the traditional factors, the Court must
`
`determine the applicability of the Confidentiality Agreement’s forum selection clause. See Gen.
`
`Protecht Grp., Inc. v. Leviton Mfg. Co., 651 F.3d 1355, 1359 (Fed. Cir. 2011) [hereinafter GPG].
`
`The Federal Circuit has held that a forum selection clause applies if the nexus between the case
`
`and the agreement at issue is “non-frivolous.” Id. In the context of defenses to infringement
`
`claims, non-frivolous means that “[t]he outcome of that dispute will determine whether the
`
`patentee can sustain its suit for infringement.” Id. “A bare allegation that a license provides a
`
`defense to the claims in suit fails to meet this standard and will not trigger a forum selection
`
`clause.” Uniloc 2017 LLC v. Cisco Sys., Inc., No. 2:18-cv-00505-JRG, 2019 WL 4451329, at *1
`
`(E.D. Tex. Sept. 16, 2019) (citing Id.). Courts in this district have noted that “[b]eyond this,
`
`however, the Federal Circuit has provided little guidance.” EVS Codec Techs., LLC v. LG Elecs.,
`
`Inc., No. 2:18-CV-00343-JRG, 2019 WL 2904747, at *2 (E.D. Tex. July 5, 2019). In the past,
`
`courts in this district used a less than one-half and nearer to the one-quarter standard to find an
`
`“attachment point” where the defense became “non-frivolous.” Id. (citing Zix Corp. v. Echoworx
`
`Corp., No. 2:15-cv-01272-JRG, 2016 WL 7042221, at *3 (E.D. Tex. June 9, 2016)). Under this
`
`standard, that attachment point is “almost assuredly . . . found before we reach the mid-point of
`
`Page 5 of 23
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`the spectrum,” and that it is probably “found nearer the one-quarter marker.” Zix, 2016 WL
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`7042221 at *3.
`
`If the court finds that the parties’ dispute triggers a valid forum selection clause, then the
`
`“district court should ordinarily transfer the case to the forum specified in that clause [unless there
`
`are] extraordinary circumstances unrelated to the convenience of the parties” that disfavor transfer.
`
`Atl. Marine, 571 U.S. at 62. “[T]his requires district courts to adjust their usual § 1404(a) analysis
`
`in three ways.” Id. at 63. “First, the plaintiff’s choice of forum merits no weight” and “the plaintiff
`
`bears the burden of establishing that transfer to the forum for which the parties bargained is
`
`unwarranted.” Id. “Second, [the] court . . . should not consider arguments about the parties’
`
`private interests” and “may consider arguments about public-interest factors only.” Id. at 64.
`
`Third, when a forum selection clause controls, “a § 1404(a) transfer of venue will not carry with
`
`it the original venue’s choice-of-law rules—a factor that in some circumstances may affect public-
`
`interest considerations.” Id. at 64.
`
`B.
`
`The Parties’ Positions
`
`Maxell asserts that Apple willfully infringed the Asserted Patents based on the June 25,
`
`2013 letter Hitachi sent to Apple. Apple contends that the 2013 letter was protected by the
`
`Docket No. 57 at 11. Apple further argues that “the
`
`mere existence of these disputes regarding the scope
`
`compels transfer to NDCA
`
`because resolving them requires interpreting the contract under California law . . . .” Docket No.
`
`69 at 8. Apple concludes that this creates a “non-frivolous” nexus between the agreement and this
`
`case, compelling transfer.
`
`Page 6 of 23
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`Maxell acknowledges that “the existence of an applicable forum selection clause that
`
`governs the dispute could remove the weight given to a plaintiff’s choice of forum and reduce
`
`venue transfer considerations to public-interest factors only.” Docket No. 65 at 12 (emphasis in
`
`original). However, Maxell argues that the
`
`forum selection clause
`
`does not apply. First, Maxell points out that
`
`and Apple has not shown that it applies at all to Maxell. Maxell highlights the
`
`
`
`provision that
`
`
`
`Second, Maxell notes that it is not relying on
`
`as a basis for willful infringement, but the separate June 2013 licensing
`
`negotiations. It points out
`
`that the two negotiations involved “very different offered
`
`transaction[s]:”
`
`Maxell contends
`
`that
`
` Docket No. 65 at 13. Thus,
`
` ” Docket No. 76
`
`at 2 (quoting Docket No. 57-22 at 3) (emphasis in original), whereas the 2013 negotiations were
`
`“directed to
`
`the patents-in-suit”
`
`Id. (emphasis in original). Maxell points out that
`
`
`
`Docket No. 57-22 at 3.
`
`Finally, Maxell argues that Apple’s actions show that the
`
`negotiations were
`
`separate and not covered by
`
` Maxell contends that
`
`
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`Page 7 of 23
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`

`

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`C.
`
`Analysis
`
`Apple’s position is that, because the
`
`mandates NDCA, the case must
`
`be transferred to NDCA to determine if the
`
`applies. This is not the test.
`
`Instead, “the Court must determine where [Apple]’s license defense falls on the continuum
`
`between wholly frivolous and success on the merits.” Uniloc 2017, 2019 WL 4451329, at *2. The
`
`merit of Apple’s defense turns on two issues, both of which must be non-frivolous: (1) that the
`
`2013 letter is within the scope
`
` and (2) that
`
` is binding on Maxell.
`
`The
`
`Id. at 2.
`
`The parties focus on whether the 2013 letter
`
` but the 2013 letter’s
`
` Docket No. 57-21 at 3.
`
`status
`
`explained below,
`
` must be established first. As
`
`Page 8 of 23
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`Id. at 4–5. Thus,
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` the Disclosing Party and its successor (Hitachi
`
`and Maxell, respectively) is free to disclose the letter as it sees fit, including to support willful
`
`infringement claims.
`
`Even if this were not true,
`
`The 2013 letter
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`
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`Page 9 of 23
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`There is no non-frivolous argument that the 2013 letter is subject to
`
`does not provide an applicable venue-selection clause, and the Court
`
`Thus, the
`
`proceeds with the traditional § 1404(a) analysis.
`
`III.
`
`Venue
`
`A.
`
`Legal Standard
`
`“For the convenience of parties and witnesses, in the interest of justice, a district court may
`
`transfer any civil action to any other district or division where it might have been brought or to
`
`any district or division to which all parties have consented.” 28 U.S.C. § 1404(a). The Fifth
`
`Circuit has developed a test based on several private and public interest factors to determine
`
`whether transfer is appropriate under § 1404(a). In re Volkswagen of Am., Inc., 545 F.3d 304, 315
`
`(5th Cir. 2008) (“Volkswagen II”). The private interest factors include: (1) the availability of
`
`compulsory process to secure the attendance of witnesses, (2) the cost of attendance for willing
`
`witnesses, (3) the relative ease of access to sources of proof and (4) all other practical problems
`
`that make trial of a case easy, expeditious and inexpensive. Id. The public interest factors include:
`
`(1) the administrative difficulties flowing from court congestion, (2) the local interest in having
`
`localized interests decided at home, (3) the familiarity of the forum with the law that will govern
`
`the case and (4) the avoidance of unnecessary problems of conflict of laws. Id.
`
`A plaintiff’s choice of venue is not an express factor in the analysis. Seven Networks, LLC
`
`v. Google LLC, 2:17-CV-00442-JRG, 2018 WL 4026760, at *8 (citing Volkswagen II, 545 F.3d at
`
`Page 10 of 23
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`

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`315). However, a moving defendant must demonstrate “that the transferee forum is ‘clearly more
`
`convenient.’ ” In re HP Inc., No. 2018-149, 2018 WL 4692486, at *2 (Fed. Cir. Sept. 25, 2018)
`
`(alteration in original) (quoting In re Toyota Motor Corp., 747 F.3d 1338, 1341 (Fed. Cir. 2014)).
`
`By applying this elevated burden of proof, the plaintiff’s choice of forum is given the appropriate
`
`deference. Seven Networks, 2018 WL 4026760, at *2 (citing Volkswagen II, 545 F.3d at 315).
`
`“Motions to transfer venue are to be decided based on ‘the situation which existed when
`
`suit was instituted.’ ” In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir. 2013) (quoting Hoffman
`
`v. Blaski, 363 U.S. 335, 343 (1960)). However, the Court may consider circumstances that were
`
`“apparent at the time the suit was filed.” Id.
`
`B.
`
`Discussion
`
`As an initial matter, Maxell does not dispute that the case could have been brought in
`
`NDCA. Accordingly, the Court focuses its analysis on the convenience factors.
`
`C.
`
`Private Interest Factors
`
`As noted above, the private factors include: “(1) the relative ease of access to sources of
`
`proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost
`
`of attendance for willing witnesses; and (4) all other practical problems that make trial of a case
`
`easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 315 (citing Piper Aircraft Co. v.
`
`Reyno, 454 U.S. 235, 241 n.6 (1981)). The Court addresses each in turn.
`
`1.
`
`Access to Sources of Proof
`
`“The first factor focuses on the locations of sources of proof, such as documents and
`
`physical evidence.” Remmers v. United States, No. CIV. A. 1:09-CV-345, 2009 WL 3617597, at
`
`*4 (E.D. Tex. Oct. 28, 2009). “Courts analyze this factor in light of the distance that documents,
`
`or other evidence, must be transported from their existing location to the trial venue.” Uniloc USA,
`
`Inc. v. Activision Blizzard, Inc., No. 6:13-CV-256, 2014 WL 11609813, at *2 (E.D. Tex. July 16,
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`Page 11 of 23
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`2014) (citing Volkswagen II, 545 F.3d at 316) (noting that this factor is still relevant even if
`
`documents are stored electronically).
`
`This factor turns on which party “most probably [has] the greater volume of documents
`
`relevant to the litigation and their presumed location in relation to the transferee and transferor
`
`venues.” Id. (citing In re Nintendo Co., 589 F.3d 1194, 1199 (Fed. Cir. 2009); In re Genentech,
`
`Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009); Volkswagen II, 545 F.3d at 314–15). “In patent
`
`infringement cases, the bulk of the relevant evidence usually comes from the accused infringer.
`
`Consequently, the place where the defendant’s documents are kept weighs in favor of transfer to
`
`that location.” In re Genentech, 566 F.3d at 1345 (citation omitted). “That access to some sources
`
`of proof presents a lesser inconvenience now than it might have absent recent developments does
`
`not render this factor superfluous.” Volkswagen II, 545 F.3d at 316.
`
`Apple contends that all its relevant documents, witnesses and evidence and any relevant
`
`third-party evidence are located or electronically accessible from NDCA. Docket No. 57 at 14.
`
`According to Apple, engineers located in Apple’s Cupertino, California headquarters developed
`
`the accused technology in NDCA. Thus, Apple says the related design and development
`
`documents, as well as the marketing, sales and financial information, are “stored in computers in
`
`or accessible from” Cupertino.
`
`Apple also contends that relevant third-party evidence is located in NDCA, specifically
`
`wireless transmission chipsets supplied by Intel and Qualcomm. According to Apple, both
`
`companies are located in California and documents related to their chipsets are “more likely to be
`
`located in or electronically accessible from NDCA than EDTX.”
`
`Apple then argues that there is no relevant evidence in this district. As to itself, Apple
`
`contends that no relevant evidence or witnesses are in EDTX. As to Maxell, Apple says Maxell
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`Page 12 of 23
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`has no physical presence or relevant evidence here. In particular, Apple complains that Maxell
`
`only identified a single witness with any ties to EDTX, Maxell’s former outside counsel, Alan
`
`Loudermilk. Apple further argues that Mr. Loudermilk is irrelevant to the transfer analysis given
`
`his former role as hired outside counsel.
`
`Maxell responds that Apple failed to provide evidence of categories and volumes of
`
`physical documents, or even better, examples of physical evidence that might have a real bearing
`
`on allegations of infringement. Thus, to Maxell, “there is no basis for the court to assign great
`
`weight.” Moreover, Maxell contends that Apple ignored the fact that its documents do not exist
`
`only in NDCA and ignored its facility in Austin, Texas. According to Maxell, Apple did not
`
`address the physical location of its documents, only the accessibility, and many of these documents
`
`may be located in Austin.
`
`As to third-party evidence, Maxell explains that relevant parts and services incorporated in
`
`the accused products are supplied by companies in Texas. Maxell points to Samsung
`
`Semiconductor, which supplies chips from its Austin factory, and Flex, which manufactures the
`
`accused Mac computers in Texas. Mr. Loudermilk’s documents, which Maxell contends are
`
`relevant to damages and willfulness, are also located in this district.
`
`Finally, Maxell notes that some of its own documents are more easily accessible in this
`
`district, including documents moved here during prior litigation and evidence related to MRDA’s
`
`research incorporating technologies from some of the Asserted Patents.
`
`Apple points to various employee witnesses as sources of proof. However, “witnesses are
`
`not sources of proof; sources of proof are sources of document[ary] and physical evidence.” Seven
`
`Networks, 2018 WL 4026760, at *3 (marshaling sources) (quotation omitted). Thus, Apple’s
`
`witnesses are considered under the second or third private factor.
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`“[A]s the Fifth Circuit explained in Volkswagen II, the fact ‘that access to some sources of
`
`proof presents a lesser inconvenience now than it might have absent recent developments does not
`
`render this factor superfluous.’ ” In re TS Tech United States Corp., 551 F.3d 1315, 1321 (Fed.
`
`Cir. 2008). “Despite technological advances in transportation of electronic documents, physical
`
`accessibility to sources of proof continues to be a private interest factor to be considered.” Implicit
`
`v. Trend Micro, No. 6:16-cv-00080-JRG, 2016 WL 9245067, at *2 (E.D. Tex. Sep. 1, 2016) (citing
`
`Volkswagen II, 545 F.3d at 316).6
`
`Here, the record is not clear that any relevant documents are located in NDCA. Apple
`
`relies on the declaration of its employee, Mr. Jaynes, but Mr. Jaynes only represented that various
`
`Apple documents “reside on local computers and/or servers located in or around Cupertino or
`
`accessible in Cupertino.” Docket No. 57-1 ¶¶ 33, 34, 35 (emphasis added). That the documents
`
`may be available in NDCA and may reside in NDCA provides no guidance for the Court. Seven
`
`Networks, 2018 WL 4026760, at *4 (“That evidence may or might exist is not enough . . . .”). On
`
`this record Apple’s relevant evidence may be located at any number of its facilities or servers, and
`
`Apple is equally capable of accessing these documents from any of its facilities, including those
`
`in Texas. That Apple can access its own documents at its headquarters, or at any of its other
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`facilities, is of no weight. Implicit, 2016 WL 9245067, at *2.
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`Similarly, the evidence before the Court is that significant third-party documents are
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`located in California but not necessarily in the Northern District. Likewise, third-party evidence,
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`and perhaps Apple’s own evidence, is located in Texas, but not necessarily in the Eastern District.
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`Apple’s contention that Qualcomm or Intel documents are available in NDCA is pure speculation.
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`6 Further, the venue analysis does not consider accessibility during discovery; instead, “[the] venue analysis is
`concerned only with the presentation of evidence at and during trial.” Seven Networks, 2018 WL 4026760, at *3 n4
`(marshaling citations) (emphasis original).
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`Page 14 of 23
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`Case 5:19-cv-00036-RWS Document 183-1 Filed 01/15/20 Page 16 of 24 PageID #: 7991Case 5:19-cv-00036-RWS Document 191 Filed 01/22/20 Page 15 of 23 PageID #: 8490
`Case 5:19-cv-00036-RWS Document 171 *
`* Filed 01/03/20 Page 15 of 23 PageID
` #: 7655
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`Moreover, Apple is inconsistent in its arguments, arguing for its own documents that the venue
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`test requires the documents be in NDCA, but arguing for third parties that they be electronically
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`available in NDCA. To the extent electronic availability is a factor in the venue analysis, the
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`evidence is that all the documents are equally electronically available in EDTX as in NDCA.
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`The only documents that any party has established are within either EDTX or NDCA is
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`Mr. Loudermilk’s documents and any relevant documents held by
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`MDRA. While
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`defendants generally carry the heavier evidentiary burden in patent infringement lawsuits, In re
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`Genentech, Inc., 566 F.3d at 1345, this evidence should not be ignored, especially in light of
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`Apple’s own lack of specificity. On this record, Apple has not established that access to evidence
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`at trial is more convenient in NDCA than in EDTX, and this factor is neutral.
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`2.
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`The availability of compulsory process to secure the attendance of witnesses
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`This factor is directed towards unwilling third-party witnesses. Seven Networks, 2018 WL
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`4026760, at *7 (citing Volkswagen II, 545 F.3d at 316). “ ‘A district court should assess the
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`relevance and materiality of the information the witness may provide’ and where a party has
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`‘identified witnesses relevant to [the] issues [present in a case], [ ] the identification of those
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`witnesses weighs in favor of [the identifying party].’ ” Id. at *8 (quoting In re Genentech, 566
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`F.3d at 1344). “[T]o properly analyze convenience, specific witnesses should be identified with,
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`at a minimum, a general statement providing the expected relevant and material information to the
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`litigation at hand.” Realtime Data, LLC v. Rackspace US, Inc., No. 6:16-cv-00961-RWS-JDL,
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`2017 WL 772653, at *10 (E.D. Tex. Feb. 28, 2017).
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`The parties primarily dispute how, if at all, compulsory service of potential witnesses from
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`third-party suppliers weighs on this factor. However, neither party identifies specific unwilling
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`third-party witnesses who may be called to trial in NDCA but not EDTX.
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`Page 15 of 23
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`Case 5:19-cv-00036-RWS Document 183-1 Filed 01/15/20 Page 17 of 24 PageID #: 7992Case 5:19-cv-00036-RWS Document 191 Filed 01/22/20 Page 16 of 23 PageID #: 8491
`Case 5:19-cv-00036-RWS Document 171 *
`* Filed 01/03/20 Page 16 of 23 PageID
` #: 7656
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`Apple focuses on unidentified Intel and Qualcomm engineers who supported the
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`development of parts of Apple’s products. Apple also contends that Maxell’s initial disclosures
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`identify potentially necessary third-party witnesses based in California.
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`Maxell notes that Apple only broadly contended that Qualcomm or Intel witnesses may be
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`called at trial and never asserted the testimony from either company or any specific employee
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`would be necessary at trial. Maxell then contends that it is irrelevant that the companies are based
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`in California, because both are subject to this Court’s subpoena power. Finally, Maxell explains
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`that, if testimony from third party companies is necessary, chances are that testimony will be
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`provided by videotape deposition. According to Maxell, even for trials in California, Apple
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`typically uses videotape deposition testimony from Qualcomm and Intel representatives, rather
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`than calling those witnesses at trial. Finally, by Maxell’s count, there are 17 total third party
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`manufacturers thus far identified, 15 of which are subject to this Court’s compulsory service power
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`and only five of which are subject to NDCA’s.
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`The parties agreed that Intel and Qualcomm, the only potential witnesses directly addressed
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`by Apple, are relevant. However, both entities are subject to this Court’s subpoena power by their
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`facilities in Texas. FED. R. CIV. P 45(c)(1)(B)(ii); Papst Licensing, 2016 U.S. Dist. LEXIS 177687
`
`at *13 (“the availability of compulsory process is not measured as against a specific employee of
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`a third-party corporation, but rather the corporation itself”). As such, they do not weigh for or
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`against transfer.
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`As for the other third parties found in the parties Initial Disclosures Docket No. 57-17 at
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`11-22, and summarized in Maxell’s Appendix 1, Docket No. 65-54, there are approximately 17
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`Page 16 of 23
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`Case 5:19-cv-00036-RWS Document 183-1 Filed 01/15/20 Page 18 of 24 PageID #: 7993Case 5:19-cv-00036-RWS Document 191 Filed 01/22/20 Page 17 of 23 PageID #: 8492
`Case 5:19-cv-00036-RWS Document 171 *
`* Filed 01/03/20 Page 17 of 23 PageID
` #: 7657
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`potentially relevant third parties.7 Of these, 11 have Texas locations and are subject to the Court’s
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`absolute subpoena power. Limiting the analysis to the parties identified in Maxell’s Initial
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`Disclosures, there are 10 third-party entities and six are subject to this Court’s subpoena power.8
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`Only Skyworks, Universal Scientific, Hitachi and Sony Corporation of America appear to be
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`outside this Court’s reach. However, Apple has not shown that these entities are within the
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`subpoena power of NDCA. Nor has Apple shown that any of the entities based outside of
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`California are subject to NDCA’s subpoena power.
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`As for individuals, the California individuals Maxell identified in its initial disclosures are
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`either Apple employees and do not weigh on this factor, or are prosecution counsel who are rarely
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`called at trial or even deposed during discovery and provide very little weight. AGIS Software
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`Dev. LLC v. HTC Corp., 2:17-CV-00514-JRG, 2018 WL 4680558, at *7 n.5 (E.D. Tex. Sept. 28,
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`2018) (“Since patent prosecuting attorneys are rarely called to trial, especially where as in this case
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`there is no claim of inequitable conduct, the Court gives little weight to the availability of
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`[prosecution counsel].”).
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`Based on the evidence before the Court, Apple has not established that the availability of
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`compulsory service weighs in favor of transfer. Accordingly, this factor is neutral. See St.
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`Lawrence Communs. LLC v. Apple Inc., No. 2:16-cv-82, 2017 WL 3712153, *3 (E.D. Tex. Feb.
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`6, 2017) (“[T]his factor’s neutrality is amplified by the fact that this Court’s deposition subpoena
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`power is equal to that of [NDCA], and Apple fails to explain or acknowledge any inconvenience
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`that would result from presenting deposition testimony at trial”); e-Watch Inc., 2016 WL 7338342
`
`at *3; Papst Licensing, 2016 U.S. Dist. LEXIS 177687 at *13-14.
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`7 Excluding Intel and Qualcomm. This counts Hitachi, MDRA and two Samsung subsidiaries as independent third
`parties. Alternatively treating the Samsung entities as a single entity or discounting Hitachi and MDRA does not
`affect the analysis.
`8 Again, excluding Intel and Qualcomm.
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`Page 17 of 23
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`Case 5:19-cv-00036-RWS Document 183-1 Filed 01/15/20 Page 19 of 24 PageID #: 7994Case 5:19-cv-00036-RWS Document 191 Filed 01/22/20 Page 18 of 23 PageID #: 8493
`Case 5:19-cv-00036-RWS Document 171 *
`* Filed 01/03/20 Page 18 of 23 PageID
` #: 7658
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`3.
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`Costs of attendance for willing witnesses
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`When analyzing this factor, all parties and witnesses must be considered. In re Volkswagen
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`AG, 371 F.3d 201, 204 (5th Cir. 2004) (“Volkswagen I”). However, “[t]his factor [] primarily
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`concerns the convenience of nonparty witnesses.” Seven Networks, 20